Chelsea FC challenge to ‘Chelski’ trade mark

Roman Abramovich was not impressed with an attempt by upstart ‘Chelski Ltd’ to register ‘Chelski’ as a trade mark. Out came the top legal signings in a court challenge, but was the Trade Marks Registry impressed? James Pond is in the commentary box.

Topic: Chelsea FC challenge to "Chelski" trade mark

Who: Hearing officer

Where: UK Trade Marks Registry

When: June 2006

What happened:

In July 2003 Russian oligarch Roman Abramovich purchased Chelsea football club, and the media immediately coined the term "Chelski". Chelsea FC subsequently applied to register CHELSKI as a trade mark in respect of various clothing (covered in class 25) in August 2003.

At the same time a British entrepreneur, Robert Gillard, picked up on the invented word Chelski from news reports in July 2003 and decided that it would make an excellent brand name. He proceeded to register it as a domain name and as various company names, with the initial idea of creating a vodka product called Chelski Blue. In October 2003 he also applied to register CHELSKI as a trade mark, this time in respect of various home linen and alcoholic drinks (classes 24, 32 and 33).

Mr Gillard then subsequently approached Chelsea FC to invite them to invest in or purchase his nascent Chelski vodka business, an approach which was rebuffed. Unsurprisingly, after that Chelsea FC objected to Mr Gillard's trade mark application, on three grounds namely (a) because CHELSKI was a well-known mark of Chelsea FC; (b) because the registration and use of CHELSKI by Mr Gillard and his company Chelski Limited would amount to passing-off; and (c) because the application was made in bad faith.

What, no Chelsea win?

For once the 2004-5 and 2005-6 back-to-back Premiership champions failed to win this contest, with the trade marks registry hearing officer rejecting the opposition in its entirety. On the evidence submitted he found that Chelsea FC had not proved that CHELSKI had become well-known and connected with the football club at the date of application in October 2003, nor that Chelsea FC's had established goodwill in the mark in respect of the products claimed in the application.

In respect of the bad faith claim, this was also rejected – despite the evidence suggesting that Mr Gillard and Chelski Limited were attempting to trade off the Chelsea FC connection (such as intending to launch a vodka product called Chelski Blue), Chelsea FC had themselves only sought to register CHELSKI in respect of class 25 products.

Therefore the hearing officer concluded that this effectively signalled that Chelsea FC were not interested in using the mark in respect of other products, such as alcoholic drinks.

Why this matters:

Apart from being another finger in the eye for Chelsea FC, which following their recent domination of English football is probably widely supported by opponents and neutrals alike, this case reiterates the dangers in not drafting a trade mark application in broad enough terms.

Chelsea FC had made an application for CHELSKI which pre-dated the Chelski Limited's application, but it was only made in respect of clothing. If at that stage, with hindsight, the Chelsea FC application had been drafted more widely to cover products such as drinks and home linen then the opposition would almost certainly have been successful.

The case also highlights the importance of collecting and retaining appropriate and compelling evidence in trade mark disputes which can be dated back to the relevant period in question.